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Tuesday, 8 February 2011

A UK-based friend of the IPKat has anxiously contacted him to ask him:

"Have you seen the final report from the Legal Services Ombudsman, whose work is now subsumed in that of the Office for Legal Complaints (Legal Ombudsman)? You will see from the attached summary (here) that she praises the work of the smaller regulators.

She refers to having reviewed one case from the Chartered Institute of Patent Attorneys (CIPA) -- but nobody knows which one it was, as the Institute has only ever dealt with one case that was within her jurisdiction (restricted to complaints against patent attorney litigators) and for that case there is no record that she was ever sent any papers on which she could assess its actions".

The IPKat can quote the relevant extract: from the report, which states (at page 3):

"I have also overseen the performance of other Approved Regulators; the Institute of Legal Executives Professional Standards Ltd, the Chartered Institute of Patent Attorneys, the
Institute of Trade Mark Attorneys and the Association of Law Costs Draftsmen. I am delighted to say that I have only investigated one complaint which was in respect of the Chartered Institute of Patent Attorneys and resulted in no recommendation being made".

The Kat supports the principle that no profession should be able to provide services without an appropriate form of supervision or regulation, but he also wonders who supervises and regulates the activities of those who do the regulating. He also finds it strange that there is apparently a phantom complaint here: can anyone who is "in the know" clear this mystery up? It's not necessary to name names, and no-one need be placed in an embarrassing position -- but this is a matter of public interest and the public, as well as the professions, are entitled to an assurance that regulatory and complaint mechanisms are in good working order [adds Merpel, and, as the European Court of Justice likes to say, they should be proportional].

8 comments:

MaxDrei
said...

What is the world coming to. We all know about those people who have reported, incredibly, that they were "unable to recall" things within their experience. More intriguing is the case of people imaginatively recalling things that perhaps did not happen at all. For those who dreamed up the regulators, it must be quite comforting to read in the Report how active the Ombudsperson has been.

As a young patent attorney, I used to write letters to clients, telling them that I was "delighted to report". That was, until my boss pointed out that clients paying for my services are not the least interested in how happy or sad I was when I wrote the letter, and that they might even be irritated to be told about my delight.

MaxDrei, your boss was clearly a curmudgeon of the old school, in which building personal rapport with clients was frowned upon. The expression of emotions fractures the wall separating the aloof, expert, professional advisor from the ignorant advisee.

Thank goodness those days are coming to an end, although the profession is not necessarily known for its progressiveness!

I am not sure that I would ever go so far as 'delight', but I am certainly not above being 'pleased' to report good news, or 'disappointed' to report the latest convoluted rejections issued by the USPTO. Nor am I averse to opening a letter with 'Congratulations!' where it is warranted.

And I have never known a client to be 'irritated' by sound advice, delivered in plain English!

You don't see any connection then, Dr Mark, between my first para and my second?

As to emotions, I'm all for them, in their place. Can't get enough of them, on the phone with clients, and in emails. But we are here discussing the Final Report from the Office of the Legal Ombudsman. How much emotion do you want, in that report?

It must be just me, away abroad too long, but there's hardly a letter written in England these days without that the writer starts with the advice to the reader that he is "happy" to report. I suppose I should be "glad" about that but, sorry, I for one find it irritating.

To close, I should say I'm "glad" I had a curmudgeon to teach me how to be a good patent attorney. Perhaps it was his experience of being cross-examined in an important patent case, that made him so careful.

The biggest problem with the patent profession is the lack of business oriented advice given to clients. This criticism covers the full range of services provided from claim drafting to opinions. The work product is frequently of an academic nature and demonstrates that the attorney has no understanding of industry or more specifically their client's specific commercial area. This isn't just my opinion, but the official opinion of those in industrial patent departments.

The attitude of MaxDrei and his mentor demonstrates the gap that needs to be bridged. If you are any way 'involved' in your client's affairs then you will have some interest in the progress of their IP position.

"Dear Client, I am disappointed to report that the Appeal Board has finally rejected your patent application on the which the future of your business depends".

Is it better to write the following? "Dear Client, the Appeal Board has finally rejected your patent application. The case is now well and truly dead, defunct, extinct, kaput. Kapish? The invoice for my services is attached and as your business is going down the pan I expect full payment within 7 days, and for any future work you must provide payment in advance."

Could anonymous oblige, with a hint where I can gather the "official" opinion of industrial patent departments. Those departments which instruct me (and keep me increasingly busy) will be at least as interested to have it as I am.

The two alternative formulations offered by Anonymous, for writing to a client, might be the only two he can think of. But I can't imagine any other reader of this blog actually using either of them. So his "is it better" question is meaningless to anybody but himself.

That said, I agree with him, that many (even most) lawyers in private practice lack understanding of the business needs of business people. Burt we know this already, don't we?

Sorry, I can't direct you to it right now. CIPA may be able to help, or IPAN or the ABPI IP Committee. But if you agree with the point, then why would you be surprised if industry did not feel the same way?

And we may know that already, but the majority of clients do not know that, so that is a problem.

"Dear Client, the Appeal Board has finally rejected your patent application. The case is now beyond any further assistance, and our final invoice for professional services is attached.

Pursuant to this outcome, your pending European patent rights have now ceased. You should therefore review the viability of your business as a matter of urgency, since competitors in EPC Member States may begin to exploit the subject-matter of the application without recourse, and any of your licensees in EPC Member States could soon approach you about the question of royalties paid to date under the defunct application. On this last point, you should ask your commercial counsel to check your licensing contract(s) for any indemnity or claw-back clauses, which may now become relevant. Alternatively, do please forward a copy of the relevant licensing contract(s) with your instructions to review, and we will perform this service promptly.

As the Decision was arrived at under the EPC and its practice, note however that it may not necessarily extend to corresponding applications and granted patents of your portfolio, since national patent law and, importantly, its practice in these countries may vary greatly.

For instance, the rationale of the Appeal Board likely could not be followed in the US, which has a much broader definition of what constitutes patentable subject-matter, and case law at variance. You may therefore wish to prioritise resources towards developing the US market, as I know that you had originally scheduled to develop the European market first.

Should you wish to accelerate prosecution of your US application in view of the above, the USPTO has maintained their "Green Technology Pilot Program" until early December 2011, and for which your invention should qualify, therefore please do not hesitate to revert back to me at your earliest convenience, should you wish to discuss this opportunity in greater detail".

Private practice 101: inasmuch as circumstances allow, never report bad news to a client without highlighting a further opportunity (regardless of whether it concerns the same subject-matter or something entirely unrelated: different invention, design, TM, etc.) It helps the client stay optimistic, and it keeps you in business. Of course, that supposes you know enough of the client's business to do just that...

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